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Trademark Terms Distinctive in One Territorial Jurisdiction, Undistinctive in Another

Distinctiveness (despite the affirmativeness of the word) is a fluid concept. It could mean “distinctive” in its class but not “distinctive enough” to prevent others from using it for their own purposes in a different class. So, too, a term accepted by a trademark office can be regarded as distinctive within its jurisdiction, but un-distinctive in another. Words that may appear arbitrary in one jurisdiction, in another may have a cultural meaning. For example, in CeWe Color AG & Co. OHG v. Shenbun Limited, D2008-0810 (WIPO July 10, 2008) (<cewe.net>), the Complainant believed that its trademark CEWE was arbitrary, as it is in Germany, but Respondent showed that “cewe” is used as a “slang word in the Bahasa Indonesia language meaning ‘girl or young woman’.” Thus, it can be said that distinctiveness is a lesser or greater factor depending on the reputation of the trademark locally, nationally and internationally.

As between two contestants offering goods or services in different classes in the same jurisdiction the distinctiveness of the term does not presuppose likelihood of confusion. In the UDRP context, trademark owners of words and phrases that have passed review cannot prevent others from using identical or confusingly similar terms as domain names where there is no evidence that respondents targeted them for their trademark values. In both trademark law and UDRP jurisprudence, there is a range of protectiveness from the least (generic and descriptive) to greatest (suggestive and arbitrary).

Within an industry words and phrases (or non dictionary linguistic constructions such as acronyms) as symbols for sources of goods or services may also be descriptive of a particular kind of product. It is not that the trademark value is lessened, but use by others in the generic sense of the construction is permissible. As between competitors within a territorial jurisdiction this may be infringement or unfair competition, but fall short when the parties are in different jurisdictions and service different markets. In ARN Industries, Inc. d/b/a Halco Lighting Technologies v. CFM Holdings Limited (on behalf of Just Raw Pte Ltd), D2011-1094 (WIPO September 6, 2011) Complainant, a U.S. company in the business of manufacturing light bulbs owns PRELED. Respondent (a Singaporean company in the same industry as Complainant), registrant of <cfm-proled.com> showed that “proled” is commonly and generally used in the LED industry to mean LED products of a “professional standard.”

While it is not overreaching for the Complainant in ARN Industries to allege cybersquatting – Respondent is in the same industry and even maintains a “marketing office” in the U.S.A. – intention to take advantage of a trademark must be more than supposition. “Clearly” (the Panel noted) “it is possible that the Respondent could have known of the Complainant’s trademark when it registered the disputed domain name … and might be deemed to be aware of its competitors and their trademarks within that jurisdiction.” However, Respondent sells its light products only within certain Asian markets. It explained that it uses the genericized “preled” in the same way that it uses the term “proEnergy” in connection with power efficient lighting. The real question”is whether there is any support for the Respondent’s contention that while two parties may own trademarks for the word ‘PROLED’ the term “proled” is in widespread use in industry as a way in which to describe certain LED products and that this was the reason for the selection of the disputed domain name by the Respondent.”

Domain names used descriptively for products offered in different markets credibly support good faith registration. In ARN Industries, search results on the Internet demonstrated widespread adjectival use of “pro” and “led”. The Panel found that the “search results do appear to be supportive of that contention. When used descriptively, the syllables ‘pro’ and ‘led’ are generally separated by a dash or space. Thus, the search results include ‘Pro LED Screens’, the ‘Pro LED Grow Light’, a ‘Pro LED Otoscope’, a ‘Pro-Led Beam’ scuba diving torch and multiple similar entries from manufacturers of various types of lighting.” For this reason, the Panel also found that “the Respondent’s assertion that it chose the term ‘cfm-proled’ to refer to it’s (i.e. CFM’s) professional LED products does appear to be reasonably credible.”

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